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Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Yes, although documentation of the power of attorney need not be submitted to the US Patent and Trademark Office (USPTO).

What information and documentation must be submitted in a trademark registration application?

Each application requires the following:

  • the applicant’s name, address and entity type;
  • the applicant’s signature or verification;
  • identification of the relevant goods or services;
  • the filing basis;
  • a drawing of the mark;
  • a description of the mark; and
  • payment of the filing fee.

However, there are additional requirements depending on the filing basis. For example, if the applicant is filing based on use in commerce, the application must include:

  • a verified statement that the mark is in use in commerce;
  • the date of first use;
  • the date of first use in commerce; and
  • specimens showing use of the mark for at least one good or service in each class.

If the applicant is filing based on a bona fide intention to use the mark in US commerce, the application must include a verified statement to this effect.  Applications based on foreign filing priority under the Paris Convention must supply details concerning the home country application or registration and a verified statement confirming the applicant’s bona fide intention to use the mark in US commerce. Registration sought through the Madrid Protocol must meet the requirements set out by the World Intellectual Property Organisation, including submission of Form MM 18 (Declaration of Intention to Use the Mark: United States of America), and also include a verified statement confirming the applicant’s bona fide intention to use the mark in US commerce.

What rules govern the representation of the mark in the application?

For any mark not in standard characters, the USPTO requires an image of the mark and a concise and accurate description of the features of the mark. The Trademark Manual of Examining Procedure sets out submission guidelines and is available on the USPTO website at https://tmep.uspto.gov/RDMS/TMEP/current#/current/d1e2.html.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

The normal application fee is $400 per class, although two reduced fee options are available if the application meets certain requirements. A Trademark Electronic Application System (TEAS) Reduced Fee filing costs $275 per class and requires the applicant to agree to: 

  • receive solely email correspondence from the USPTO; and
  • file certain required submissions electronically.

A TEAS Plus filing costs $225 per class, but requires the applicant to agree to: 

  • file a complete application (ie, with no application form fields left incomplete);
  • use approved USPTO Identification Manual language for the description of goods and services;
  • pay fees for all classes at the time of submission;
  • file electronically; and
  • receive email communications only.

Priority

How are priority rights claimed?

To claim Paris Convention priority rights based on a previously filed application or registration, the applicant must: 

  • file a claim of priority within six months of the filing date of the foreign application;
  • identify the foreign application or registration; and
  • if filing solely on the basis of priority and not combining it with a use or intent-to-use filing basis, verify the applicant’s bona fide intention to use the mark in commerce in the United States.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches are not required before filing; however, they are highly recommended to ensure that a proposed mark is not likely to be confused with another mark already on the register. Applicants may search the USPTO database at www.uspto.gov at no cost. It is recommended that an applicant consult with a US trademark attorney regarding whether to conduct more in-depth searches.

Examination

What factors does the authority consider in its examination of the application?

A USPTO examining attorney will review the application for completeness and compliance with the main registrability requirements.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes. The applicant may respond to and resolve any objections. Most likely, the examining attorney will issue a communication known as an office action, to which the applicant will have six months to respond. If the objection is relatively minor, the examining attorney may contact the applicant (or its counsel) by telephone or email.

Can rejected applications be appealed? If so, what procedures apply?

Yes. Unsuccessful applicants may appeal to the Trademark Trial and Appeal Board by filing a notice of appeal and paying the requisite fee within six months of the date of final rejection. Notices of appeal must be filed through the Electronic System for Trademark Trials and Appeals. The applicant must then file an appeal brief within 60 days of the date of the appeal. The examining attorney will then have an opportunity to respond and the board will subsequently issue its decision.

Registration

When does a trademark registration formally come into effect?

A trademark registration formally takes effect on the registration date; however, once registration issues, the rights provided by registration will date back to the filing date of the application.

What is the term of protection and how can a registration be renewed?

A trademark registration can be maintained indefinitely if the owner submits the proper maintenance and renewal documents. To maintain a registration, the owner must file both a statement of use and a specimen showing current use of the mark in US commerce between the fifth and sixth anniversaries of the registration date. The registration must be renewed in the one-year period before the 10th anniversary of the registration date and can be renewed every 10 years thereafter, if the owner files an accompanying statement of use and specimen showing current use of the mark in commerce.

What registration fees apply?

The USPTO does not impose registration fees in addition to the application fees. In addition to the application fees, however, intent-to-use applications require payment of an additional $100 per class fee upon filing a required statement of use, which shows the mark in use in commerce for the subject goods or services. A limited number of extensions for filing a statement of use are available; each extension involves a $125 per class fee. Additional fees may be charged in certain circumstances throughout the process; the full list of fees can be found at www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#TM%20Process%20Fee.

What is the usual timeframe from filing to registration?

If no substantive issues arise during the examination process, registration may be granted within six to nine months of the application’s filing date.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes. US law allows “any person who believes it is or will be damaged by registration of a mark” to oppose an application. The only requirement is the allegation of facts sufficient to show a real interest (ie, a real and personal stake) in the outcome of the proceeding.

Applications can be challenged on a number of grounds, including:

  • non-compliance with the main registrability requirements; and
  • if registration of the applied-for mark is likely to dilute the distinctiveness of the plaintiff’s famous mark.

On publication, would-be opposers have 30 days to file a formal opposition or request an extension of time to do so. The deadline can be extended for up to 90 days without the applicant’s consent and an additional 60 days with the applicant’s consent. Oppositions are governed by the Lanham Act, the Trademark Rules (Parts 2 and 7 of the Code of Federal Regulations) and the Trademark Trial and Appeal Board (TTAB) Manual of Procedure.

What is the usual timeframe for opposition proceedings?

The Trademark Rules outline a standard timeframe for the discovery period, testimony periods and briefing schedules. The standard schedule has the opposer’s reply brief on the merits due 550 days (one-and-a-half years) after the filing of the notice of opposition. The TTAB usually issues a decision within eight months of submission of the briefs. The parties can agree to an accelerated case resolution schedule, which can shorten that timeframe considerably.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes. The losing party in an opposition can appeal to either the US Court of Appeals for the Federal Circuit or a federal district court with jurisdiction over the parties. An appellant to a district court must reimburse the USPTO for its expenses, even if the appeal succeeds. Appeals to the Federal Circuit are governed by the Federal Circuit Rules, while appeals to a federal district court are governed by the Federal Rules of Civil Procedure. The notice requirements and deadlines for filing an appeal are set out in the TTAB Manual of Procedure. Parties generally have 60 days from the date of the decision in which to appeal the TTAB’s decision. If a party appeals to the Federal Circuit, the non-filing party has 20 days to file a notice of election to have the decision reviewed by civil action.

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